Appeal 2005-0801
Application 09/848,628
As stated by our concurring colleagues, the Federal Court’s opinion in
In re Clement sets forth a three-step test for analyzing recapture. In re
Clement, 131 F.3d 1464, 1468, 45 U.S.P.Q.2d 1161, 1164 (Fed. Cir. 1997).
However, although we and our concurring colleagues agree with the
outcome of the application of this test in the instant case, our analysis in
reaching this outcome is significantly different, as discussed below.
Our analysis is not limited to the reasons provided by the Examiner on
page 6 of the Supplemental Examiner’s Answer, and as discussed by our
concurring colleagues (the reasons expressed focus on certain limitations
that are absent from the reissue claims). That is, a proper analysis involves a
more comprehensive review of the prosecution history of Application No.
08/887,238, and is not limited only to ascertaining which limitations are
absent from the reissue claims.7 In other words, other evidence in the
prosecution history must be considered. Id.
Also, binding precedent has defined surrendered subject matter in
terms of a claim that had been canceled or amended to avoid a rejection. See
In re Clement, 131 F.3d 1464, 45 U.S.P.Q.2d 1161 (Fed. Cir. 1997); Ball
Corp. v. U.S., 729 F.2d 1429, 221 U.S.P.Q. 289 (Fed. Cir. 1984); In re
Richman, 409 F.2d 269, 161 U.S.P.Q. 359 (CCPA 1969); In re Beyers,
230 F.2d 451, 109 U.S.P.Q. 53 (C.C.P.A. 1956); In re Wadsworth, 107 F.2d
7 We believe that such a limited review of the prosecution history
contradicts the established legal principle that the recapture rule is analogous
to prosecution history estoppel. See Hester Indus., Inc. v. Stein, Inc., 142
F.3d 1472, 1481-82, 46 U.S.P.Q.2d 1641, 1649 (Fed. Cir. 1998).
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